Europe

Brexit

Posted on 04/03/2019 by balder

Unión Europea

As you may know, the UK Government and the European Union are considering a number of possible scenarios depending on whether there is a ‘deal’ or ‘no deal’ Brexit.

Bearing in mind the current uncertainty -since at present no one really knows exactly what is going to happen- and with the approaching deadline of 29 March 2019, we have described the position with regards to IP rights as it currently stands as follows:

UK NATIONAL TRADE MARKS

UK national trade mark rights will be unaffected by the UK’s departure from the EU. This means that any trade marks, including International or Madrid Protocol Trade Mark Registrations (WIPO) that designate the UK, will continue to apply in the UK. The UK will also continue to be available as a designated state of a WIPO Trade Mark Registration after the UK leaves the EU.

In terms of future oppositions to EUTM applications following Brexit, it will no longer be possible to base an opposition on a UK right. If you only have a UK national registration, consideration should be given to applying for an EUTM or national registrations in the EU so that the ability to oppose conflicting EUTM applications is maintained after Brexit.

EUROPEAN UNION TRADE MARKS
REGISTERED EUTMs IF THERE IS A ‘NO DEAL’

The UK Government will ensure that rights in all existing registered EUTMs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark in the UK. This new “cloned” right will be granted at no cost, but the new UK right will require its own renewal, along with the renewal of its corresponding EUTM right.

The new “cloned” UK right will have its own prefix designation added to its EUTM number to show that it is a “cloned” registration and will come into force at 11pm (UK time) on 29 March 2019.
Key points to note about the new UK right:

• The UK Intellectual Property Office (UKIPO) will notify rights holders that a new UK right has been created by issuing a notice on its website.
• If you do not wish to receive a new “cloned” UK right, it will be possible to opt out. This may be necessary if, for example, the existence of a UK registration would contravene an agreement that is in place with a 3rd party. You may also wish to opt out if you have an existing identical UK trade mark right covering identical goods and services and prefer not to have a duplicate cloned right.
• These same provisions will apply to WIPO Trade Mark Registrations designating the EU. It should be noted that these too will be cloned into separate national UK rights.
• The new UK right will be subject to renewal in the UK.
• The new UK right will be able to form the basis for proceedings before the UK Courts and the UKIPO.
• The new UK right will be able to be assigned and licensed independently of the corresponding EU trade mark right.

REGISTERED EUTMs RIGHTS IF THERE IS A DEAL

The ‘no deal’ provisions will also apply if the current terms of the Withdrawal Agreement are implemented. The main difference is that the Withdrawal Agreement provides for a transition period ending on 31 December 2020 at the earliest.

As such, the ‘no deal’ provisions, if a deal is achieved, will not come into force until after the transition period.

TRADE MARK USE IMPLICATIONS

The position regarding proof of use (to defend potential revocation actions) of existing EUTM registrations and the new “cloned” UK registrations is as follows:

For EUTM registrations

• Pre-Brexit use: Genuine use of a trade mark in the UK and/or any other of the remaining 27 Member States, in the 5 years prior to the exit day, will constitute proof of use for an EUTM registration.
• Post-Brexit use: Only genuine use in the remaining 27 EU Member States, will be sufficient, i.e. use in the UK post-Brexit will not be proof of use for an EUTM registration.

For Cloned UK registrations

• Pre-Brexit use: Genuine use of a trade mark in the UK and/or any other of the remaining 27 Member States, in the 5 years prior to the exit day, will constitute proof of use for a cloned UK registration.
• Post-Brexit use: Only genuine use in the UK, will be sufficient, i.e. use in the remaining 27 EU Member States post-Brexit will not be proof of use for a cloned UK registration.

A cloned UK registration which is derived from an EUTM registration that has not been used for five years or more will immediately be vulnerable to non-use revocation (as will the EUTM registration).

PENDING EUTMs WHETHER THERE IS A DEAL OR NO DEAL

For any EUTM applications which are still pending at the point of exit, there will be a 9-month window in which applicants will be able to re-file the application in the UK.
This will also be the case for EU designations under the WIPO Registration system if UK protection is required.

The key points to note are as follows:

• Filing within this 9-month window will maintain the filing/priority date of the corresponding EUTM application.
• The new UK application will be subject to the usual application cost of a new UK application.

Applicants will not be notified of this 9-month window by the UKIPO.

TRADE MARK OPPOSITIONS

If an EUTM application has been opposed based solely on a UK national right, the opposition will fall away following Brexit. It is advisable to review all the EUTM oppositions that may have been filed and ascertain whether if any action is required.

EUTM RENEWALS

As it is possible to renew EUTM registrations within 6 months prior to their renewal dates, it is advisable that all EUTM registrations that are due for renewal before 29 September 2019 (and are still of interest) are renewed before 29 March 2019. This means that it will not be necessary to pay separate renewal fees for the EUTM and the cloned UK registration.